THE REDEFINATION OF ‘TRADEMARKS’ UNDER THE BUSINESS FACILITATION ACT

 

“Except in
relation to a certification trademark, a mark used or proposed to be used in
relation to goods for the purpose of indicating, or so as to indicate, a
connection in the course of trade between the goods and some person having the
right either as registered user to use the mark, whether or without any
indication of the identity of that person, and means, in relations to a
certification mark, a mark registered or deemed to have registered under
Section 43 of this Act” –Section 67 Trade Marks Act.

 

THE OLD ORDER

The above excerpt is the precise expression of the
meaning of a trademark under the Nigerian Trademarks Act. The definition only
recognizes, as trademark, marks used or proposed to be used in relation to
goods. This definition has largely unsettled attempts to link service marks
with trademarks under the Act.

In other words, businesses that engage in provision
of services rather than production or sale of goods cannot easily identify with
the definition for a recognition of their mark as trademark. Essentially,
Service mark is a word, phrase, symbol, or logo that is used to brand, identify,
and distinguish a service rather than a good. Therefore, on the surface,
Service mark is not recognized under the definition section of the Trademarks
Act and therefore not registrable in Nigeria.

The dilemma erupts a compelling probe as regards the
registration of service mark in the Trademark Register and the legality of
same. Although, it is not that attempts have not been made to salvage the
omission of service marks from the definition of trademark. However, the
continued registration of service marks in Nigeria, has hitherto been justified
by the effort of the Minister to introduce and recognize service marks through
the backdoor –independent of the Trademarks Act. Thus, Sections 42(1) and 45 confer
on the Minister of Industry, Trade, and Investment a discretionary power to
make regulations empowering the Registrar of Trademarks to amend the register
so as to be in compliance with any amended or substituted classification that
may be prescribed. The Act in Section 45(b) further clothe the Minister with
the power to make regulation for classifying goods for the purposes of the registration
of trademarks. 

In the exercise of the power conferred by the Act,
the Minister made the 2007 Ministerial Regulation seeking to amend the
Trademark Regulation of 1967. The Minister, by fourth schedule of the Trademark
Regulation 2007, extended classes of goods from 34 to 45 in accordance with the
9th Edition of the Nice Agreement
Concerning the International Classification of Goods and Services for the
Purposes of the Registration of Marks. As such, service marks could be
registered by the authority of the Regulation. Under the fourth Schedule of the
Regulation, the class heading describe in very broad terms the nature of the
goods or services contained in each of the 34 classes of goods and 11 classes
of services.[1]  The 11 classes of services are as follows:

Class 35 –
Advertising, Business management, Business Administration, Office functions.

Class 36 –
Insurance, Financial Monetary Affairs and Real Estate Affairs.

Class 37 –
Building Construction, Repair and Installation services

Class 38 –
Telecommunications

Class 39 –
Transport, Packaging and Storage of goods, Travel arrangement

Class 40 –
Treatment materials

Class 41 –
Education, Providing of training, Entertainment, Sporting and Cultural
Activities

Class 42 –
Scientific and Technological Services and Research & Design relating
thereto, Industrial Analysis research services, Design and development of
computer, Hardware and Software 

Class 43 –
Services for providing food and drinks, Temporary accommodation

Class 44 –
Medical services, Veterinary services, Hygienic and Beauty care for human
beings or animals, Agriculture, Horticulture and Forestry services.

Class 45 – Legal
services, Security services for the protection of property or individual,
personal and social services rendered by others to meet the need of the individual.[2]

 

The foregoing has however, in no way settled the
doubt about the legitimacy of service mark and whether service mark is alien to
the Trademarks Act. It has been argued against the validity of the Trademark
Regulations, that Sections 42 and 45 of the Trademarks Act, which confers
regulatory powers on the Minister do not confer on the Minister the power to
extend the classification of goods under the Fourth Schedule to include
services. The position has often been that, a trademark to be valid must relate
to goods as defined by the Trademarks Act. Therefore, the introduction of Service
marks by the Minister through the Regulation is ultra vires the powers conferred on the Minister by the Act, hence,
unrecognized. The debate caused a wide clamor for an amendment of the Act.

 

THE REDEFINITION

On the 8th of February, 2023, President Muhammadu
Buhari signed the Business Facilitation (Miscellaneous Provisions) Bill, 2022,
into law. The Business Facilitation (Miscellaneous Provisions) Act was
introduced to promote the ease of doing business in Nigeria, eliminate
bottlenecks in commercial activities and procedures, and institutionalize all
reforms to ease implementation. Remarkably, the Act amends 21 business-related
laws, including the Nigerian Trademarks Act.

Thus, Paragraph 69 of the Schedule to the Business
Facilitation Act now amends Section 67 of the Trademark Act to proffer a new
and more exhaustive definition of a ‘trademark’. The paragraph defines a trade mark
as:

(a)
a mark used or proposed to be used in relation to goods or services for the
purpose of indicating a connection between the goods or services and a person
having the right either as proprietor or as a registered user to use the mark,
whether with or without any indication of the identity of that person, and may
include the shape of goods, their packaging, and combination of colours”

The new definition of trade mark above now puts to
rest the lingering concern about inclusion of service marks as part of
trademark; not only has the amendment extended trademark to include service
mark but also stretches the scope of trademark to clearly absorb and recognize the
shape of goods and combination of colours.

Another development heralded by the new definition
of ‘trademark’ by the amendment under the Business Facilitation Act is the
exclusion of the phrase ‘in the course of
trade’, from the definition of a trademark. Thus, prior to the amendment,
the old definition considers as trademark,
“…a mark used or proposed to be used in relation to goods for the purpose of
indicating, or so as to indicate, a connection in the course of trade between the goods and some…”. By
implication, until the amendment, it was necessary that the mark claimed to be
a trade mark must be used by the proprietor in the course of trade. This, in fact, was affirmed in the case of Ferodo v Ibeto (2004) 5 NWLR (Pt. 866) 317,  where the Supreme Court held that the “essence of a trade mark is that it
indicates a connection in the course of trade between the goods and some
person having the right to use the same”. In a context, the English Court
of Appeal considered the implication of the phrase “In the course of trade” in
the case of Aristoc Ltd v Rysta Ltd
(1945) RPC 65, where, in interpreting a similar definition under the
English Trade Marks Act, held that the trade mark “Rysta” had not been used in
the course of trade, because the Applicant had only applied it to socks which
it repaired, but did not manufacture or sell in England. Hence, the Applicant’s
“Rysta” was held not to be a trade mark.

Consequently, by the old definition in Section 67 of
the Trade Marks Act, the Trade Marks registered and used by charitable organizations,
and incorporated trustees in respect of goods or services which they do not
trade or offer commercially to the public could be challenged on the basis that
they did not indicate any connection to the proprietors “in the course of
trade”.[3]

However, by the new definition, there is no longer a
requirement for a trade mark to indicate any connection with the proprietor in
the course of trade. It is enough that the trade mark indicates the origin of
products or services or shows connection with a product or services, even if
these are not offered commercially to members of the public. Therefore,
incorporated trustees, charitable organizations, and even retail services can
have valid registrations for trademarks which they apply to goods or services that
are not offered in trade.[4]
Importantly, however, it is still subsisting under Section 5(2) of the Trade
Marks Act that, to prove an infringement of trade mark, it must be shown that
the infringer has used the Trade Mark in
the course of trade.

Finally, the new definition now confirms that a
registrable trademark may include may include the shape of goods, their
packaging, and combination of colours It is not that the foregoing had been in
dispute prior to the amendment, it is however, a novel inclusion in the new
definition but not contained in the definition.

CONCLUSION

The laudable amendment of the Trade Marks Act by the
Business Facilitation (Miscellaneous Provisions) Act, 2022, has now bestowed on
‘Trade Mark’ a new identity. Thus, the new definition of trade mark by virtue
of the amendment is most laudable for its elasticity of scope as it finally
puts to rest the worry about non-recognition of service marks by the Trade
Marks Act.